What makes for a successful patent Office Action response?

When it comes to responding to patent rejections, you have essentially two weapons. First, you can amend the claims. Second, you can argue against the claim rejections. A successful patent Office Action response typically involves a combination of claim amendments and technical arguments. This is a not a DIY post on how to write an Office Action response yourself. Instead, we want to empower clients with a proper understanding of how a patent response works so that they can provide more helpful feedback.

Where do you start in reviewing a draft patent response?

Start with the independent claims. Are the independent claims being amended? If so, can you live with narrower scope as a result of additional features or limitations being added to each independent claim? You can tell what is being added by the underlined language in the claim.

Overcoming a patent rejection based on prior art is a bit of a dance with the patent examiner where you trying to find that right balance. Your goal is add certain features to each independent claim to overcome the prior art rejections, but without giving away too much. If you add too much, you might get allowed claims in a patent that will not be strong enough to block competitors. If you give away too little (which examiners will often feel is the case), then you risk receiving another Office Action.

Are the technical arguments in the Remarks section convincing?

Notice that I said “technical arguments” as opposed to legal arguments. For a patent examiner who reviews hundreds of Office Action replies per week, their eyes must undoubtedly glaze over copy-and-paste legal arguments mindlessly splattered throughout the replies.

What makes for a winning patent Office Action response is an astute observation of what is missing in each cited prior art reference. The arguments should then emphasize that such missing features are what makes the applicant’s claimed invention unique.

What are common mistakes in responding to a patent Office Action?

A typical omission we have seen in cases transferred to us is a disconnect between the arguments and claims. In particular, a patent response will contain arguments as to why the applicant’s invention is different than prior patents. However, those differences are not specifically included in the claims.

The claims must be amended to recite those key unique features. Accordingly, the arguments can then point to those claimed differences. Without this connection between the claims and arguments, the examiner will send a further Office Action stating that the arguments discuss a bunch of stuff that is not being claimed.

Should you worry about limiting features in dependent claims?

Keep in mind that a dependent claim does not change the scope of the independent claim from which it depends. So any limiting language found in a dependent claim will restrict only that particular dependent claim and not the independent.

For example, suppose an independent claim covers a device comprising a container and a lid. Dependent Claim 2 says the device of claim 1 further comprising a handle on the lid. It would be a mistake to read dependent Claim 2 and think that Claim 1 now requires a handle.

The proper way to review dependent claims is look at them as secondary or tertiary categories of features. Those features may still be meaningful, but they are not included in the independent claim. Therefore, your broader independent claim may cover a competitor’s product that omits features recited in your dependent claims (e.g., a competing device that has a box and a cover, but no lid).

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. We have helped clients obtain 700+ granted patents, 500+ registered trademarks and countless foreign IP registrations. Let's get to work on your IP: (949) 223-9623 | vlin@icaplaw.com

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